big5sportingoods.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Big 5 Corp. v. Peter Carrington and Party Night Inc.

Case No: D2002-0897

The Complainant is Big 5 Corp. of California, United States of America, represented by Holland & Knight, LLP of Los Angeles, United States of America.

The Respondents are Peter Carrington and Party Night Inc. of Amsterdam, the Netherlands.

The disputed domain name is <big5sportingoods.com> registered with Key-Systems GmbH dba domaindiscount24.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 27, 2002. On September 27, 2002, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On October 1, 2002, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2002.

On November 4, 2002, the Center appointed Samuel K.B. Asante as sole panelist in this matter. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules paragraph 7.

On November 13, 2002, upon the receipt of Panel’s request, WIPO notified a revised decision date as November 27, 2002, to the parties.

The Complainant is BIG 5 CORP, a corporation existing and organized under the laws of the State of Delaware, United States of America.

The Complainant has used the service marks BIG5® and BIG 5 SPORTING GOODS^{SM in} connection with retail sale of sporting goods and wearing apparel since 1956 and 1963 respectively. Documentary evidence of the registration of the service mark "BIG 5" was provided.

On May 3, 2002, the Complainant submitted its application with Serial No. 76/403, 966 for the registration of the mark BIG 5 SPORTING GOODS^SM.

The Respondents’ domain name <big5sportingoods.com>, was registered on May 20, 2002, with Key-Systems GmbH dba domaindiscount24.com.

The Complainant initiated this complaint procedure for the transfer of the domain name <big5sportingoods.com> to the Complainant.

The Complainant claims that its service marks BIG 5® and BIG 5 SPORTING GOODS^SM have been used by the Complainant in connection with the retail sale of sporting goods and wearing apparel since 1956 and 1963 respectively and are well known throughout the western portion of the United States. According to the Complainant "[b]oth marks are prominently displayed both outside and within Complainant’s 263 retail sporting goods stores which are located throughout the western portion of the United States."

The Complainant claims that its "annual advertising expenditures under its marks for its retail stores and the sale of sporting goods and wearing apparel exceeds $42,000,000 (USD) and includes the distribution of approximately 12,500,000 newspaper inserts and mailers per mark."

The Complainant argues that the "Respondents’ Domain Name <big5sportingoods.com> incorporates Complainant’s registered service mark, BIG 5® and is virtually identical to its equally well-known service mark, BIG 5 SPORTING GOODS^SM, which Complainant has used continuously for almost 40 years. Respondents’ domain name differs only in a single letter and clearly constitutes an intentional misspelling of Complainant’s mark designed to constitute the most likely typographical error one might make when attempting to reach Complainant’s website at <big5sportinggoods.com>.

The Complainant alleges that the "Respondents’ Website, however, has nothing to do with sporting goods as the name would suggest. It is a pornographic site and, as such, will undoubtedly tarnish Complainant’s good name and its marks".

Complainant also asserts that the Respondents have no right to or legitimate interest in the Domain Name. The Complainant argues that its marks are well-known in the US in connection with the retailing of sporting goods and related services. In addition the Complainant submits that "Respondents are not commonly known by the BIG 5 SPORTING GOODS name, undoubtedly never used the name prior to registering the domain name and, just as the domain name has absolutely no connection with the issue of pornography."

The Complainant alleges that the registration of the Domain Name by the Respondents was done in bad faith. This was because had the Respondents conducted a trademark/service mark search at the time they registered the Domain Name, the Respondents would have received notice of Complainant’s issued US service mark registration for the mark BIG 5® and of its pending application for the registration of the service mark BIG 5 SPORTING GOODS^SM.

The Complainant further accuses the Respondents of using the domain name in bad faith since the Respondents have registered the Domain Name and used the name in a manner "with the intent to sell the name to Complainant at a profit." In the view of the Complainant, "Respondents hope that Complainant will purchase the domain name from Respondents to affect (sic) the transfer of the name to Complainant as quickly as possible so as to avoid offending additional customers".

As further evidence of registration in bad faith, Complainant alleged, on information and belief, that the Respondents used a false address and telephone number in registering the domain name. The Complainant claims that it became aware of the falsity of such information when an investigative consultant engaged by the Complainant’s counsel attempted to contact the Respondents using the address and telephone number identified by the Registrar’s Whois database. It was discovered that the telephone and address were those of a hotel and that it did not have Respondent, Peter Carrington staying there as a guest. Complainant tendered an affidavit in support of this allegation.

Finally, the Complainant accuses the Respondents of having a pattern of such activities and points to a previous decision in which the same Respondents were found to have engaged in abusive registration of a domain name, the facts of that case being virtually identical to this case.

On the strength of the said decision, the Complainant again accuses the Respondents of bad faith when it registered a misspelling of the Complainant’s mark BIG 5 SPORTING GOODS^SM and used it as a pornographic website contrary to the use of the mark by the Complainant.

The Respondents did not file a response to the complaint.

In its discussions and findings, the Panel was compelled to draw appropriate inferences from the Respondents’ failure to file a response to the Complaint.

Under paragraphs 4 of the Policy, the onus is on the Complainant to prove each of the following:

(1) That the domain name registered by the Respondents is identical or confusingly similar to a trade-mark or a service mark in which the Complainant has rights;

(2) That the Respondents have no rights or legitimate interests in respect of the domain name; and

(3) That the domain name has been registered and is being used in bad faith.

The Complainant’s allegation that the disputed domain name is identical or confusingly similar to the service mark BIG 5 SPORTING GOODS^SM is well- founded. The disputed domain name i.e. <big5sportingoods.com> does indeed incorporate the service mark BIG 5 and is virtually identical to the service mark BIG 5 SPORTING GOODS^SM.

The only difference between the disputed domain name and the mark "Big 5 Sporting Goods" is the omission of a single letter "g" from the word "sporting."

However, to succeed under this heading, the Complainant must establish further that it has rights in the claimed service marks. In this regard, the Complainant has submitted uncontested evidence of the use of the two marks for some 40 years in connection with the retail sale of sporting goods and wearing apparel.

Furthermore, the Complainant has provided documentary evidence of United States Service Mark Registration No. 1,929,798 for BIG 5® (Annex 4), although it is by no means evident on this copy that the service mark was registered in the name of the Complainant. The name, which appears on the register is the United Merchandising Corp (California Corporation) of 252 East, E1 Segundo Blvd, E1 Segundo, C.A. which happens to be the operational address of Big 5 Corp.

The document, however, does not clarify the basis of the transfer of the ownership of the service mark to Big 5 Corp. It is however significant that Complainant’s assertion of ownership of the service mark was not contested.

Complainant also has submitted documentary evidence of its pending service mark application for the mark "Big 5 Sporting Goods", which was deposited with the US Postal Service on May 3, 2002, for transmission to the Commissioner for Trademarks at 2900 Crystal Drive, Arlington, Virginia 22202 – 3513.

No evidence of official acknowledgement or processing of the application by the US Commissioner for Trademarks was provided.

Notwithstanding the foregoing technical questions with respect to registration, it is not contested that the Complainant has used both service marks for decades in the retailing of sporting goods and wearing apparel in a chain of stores located in the western part of the US. Such long-standing and notorious use is a sufficient basis for the acquisition of rights in the two service marks.

The Panel therefore holds that the Complainant has successfully established that the Respondents disputed domain name is confusingly similar to service marks in which it has rights.

Complainant submits that the Respondents have no rights or legitimate interests in or with respect to the domain name for a number of reasons.

First, the Respondents are not commonly known by the BIG5SPORTINGOODS name and never used the name prior to registering the domain name.

Second, the domain name has absolutely nothing to do with sporting goods or the retail sale of sporting goods.

Third, the Respondents are actually engaged in pornography.

Without wading through the lurid pornographic material attributed to the Respondents, it is clear that the Respondents have not availed themselves of any of the opportunities of providing the kind of evidence which has been specifically prescribed under paragraph 4 (c) of the Policy for demonstrating their rights or legitimate interests in the domain name for the purposes of paragraph 4 a(ii) of the Policy, namely evidence to establish that:

1. prior to the notification of the dispute, the Respondents used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

2. that the Respondents as individuals, a business or other organization have been commonly known by the domain name even if they had acquired no trademark or service mark rights; or

3. that the Respondents are making a legitimate, non commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the absence of any evidence demonstrating any of the above or any other rights to or legitimate interests in the domain name, the Panel is compelled to sustain the Complainant’s contention that the Respondents have no rights to or legitimate interest in the domain name.

The Complainant cites several grounds for its allegation that the domain name was registered and used in bad faith.

Among these are the following:

i) That given the notoriety of the Complainant’s name and service marks, the Respondents were well aware of the Complainant’s service marks at the time of registration. It is to be noted that the domain name was created in Germany whilst the Complainant’s claim of wide usage of the marks was in the western part of the US.

In any case, Complainant maintains that the Respondents would have received notice of Complainant’s issued US mark registration and of its pending application for the registration for the mark BIG 5 SPORTING GOODS^SM , if the Respondents had conducted a trademark/service mark search.

With regard to notice of the pending registration, the Panel notes that the Complainant mailed its application for registration with the US Patent and Trademark Office on May 3, 2002. There is no record of any official cognizance of this application by the US Patent Office before the registration of the disputed domain name on May 20, 2002. Thus, on the face of the documentary evidence, it cannot be assumed that a search carried out prior to May 20, 2002, would necessarily have disclosed the pending application.

However, the Panel endorses the uncontested submission of the Complainant that the notoriety of the Complainant’s name and service marks is such that the Respondents must have been aware of the Complainant’s name and marks prior to the registration of the domain name. This would satisfy the essential prerequisite of knowledge in establishing registration and use in bad faith.

ii. Complainant alleged, on information and belief, that the Respondents registered the domain name and used the name with the intent to sell the name to the Complainant at a profit. No evidence was submitted by the Complainant beyond this bald assertion and the Panel is not inclined to sustain it.

iii. Complainant also alleged that the registration of this domain name by the Respondents constituted typosquatting. This consists of the registration of domain names that are likely misspelling of famous marks in anticipation that customers would make a mistake, thereby increasing the number of hits one’s site would receive, and consequently the number of advertising dollars they would gain. Such an activity would constitute the use of the domain name in bad faith and is specifically cited as evidence of registration and use in bad faith under paragraph 4 b(iv) of the Policy.

Although the specific intent of the Respondents. is not obvious, the nature of the modification of the Complainant’s service mark by the Respondents, i.e. the deletion of one letter and all the surrounding circumstances lead to the reasonable inference that the registration and use of this domain name was an exercise in typosquatting.

Further, the Complainant alleged, upon information and belief, that when the Respondents registered the disputed domain name, they used a false address and telephone number. This allegation is supported by the report of an investigative consultant which appears credible to the Panel.

The Panel agrees that the use of a false name and address in registering the disputed domain name is further evidence of bad faith by the Respondents. The Panel accordingly holds that there is sufficient evidence of the registration and use of the domain name in bad faith.

In view of the above findings of bad faith, the Panel does not consider it necessary to pronounce on the Complainant’s allegation about the Respondents’ pattern of similar activities.

For all the foregoing reasons, the Panel decides that the domain name registered by the Respondents, <big5sportingoods.com> is identical or confusingly similar to the service marks in which the Complainant has rights, that the Respondents have no rights or legitimate interests in respect of the domain name, and that the Respondents' domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4 (i) of the Policy, this Panel requires that the said domain name be transferred to the Complainant.